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Industrial Designs

Pm Rohazar Wati
The Old law
United Kingdom Designs ( Protection ) Act
1949.
- provide for protection of designs in West
Malaysia for designs registered in the UK
The Designs ( United Kingdom) Ordinance
of Sarawak.
The United Kingdom Designs ( Protection)
Ordinance of Sabah.
The New law
The Industrial Designs Act 1996.
Came into force 1999.
Industrial Designs Regulation 1999.
Transitional provision would apply for
designs registered in the UK and
application pending in the UK.
Industrial Designs Act 1996
Locarno Agreement (International
Classifications for Industrial Design)
Industrial Designs Regulations 1999
Paris Convention for the Protection
Of Industrial Property 1883
What is a design?
Ian Morris : Design, the modern law and
practice.
Case : Clarke v Julius Sax & Cp ltd. 13
RPC 351 CA.

Differences between designs
protection and copyright
- design must be validly registered
-design must be new( novelty) at the date
of application.
Once registered, absolute monopoly.
Renewal fee must be paid.
Copyright protection
Artistic work
Created by person having qualification for
protection
Work must be original but not new.
No registration provision.
Difficult in infringement proceeding if work
is not a copy but identical.
Copyright does not protect idea.
What are registrable designs
Section 1 UK Registered Designs Act
1949
Section 3 Industrial Designs Act 1996.
Industrial designs means.
Definition: Section 3(1) IDA 1996

Industrial Designs means features of
shape, configuration, pattern or
ornament applied to an article by any
industrial process or means, being
features which in the finished article
appeal to the eye and are judged by the
eyes.
Main element
1.Designs must have references to some
article.
Meaning of article.
Set of article.
Must be article of manufacture.
Case: Dover v Nurnberger Celluloid
Waren Fabrik Gebruder Wolff 1910, 27
RPC 498. Buckley LJ
Section 3(1) IDA 1996

any article of manufacture or
handicraft, and includes any
part of such article or handicraft
if that part is made and sold
separately

Section 3(1) IDA 1996

a number of articles of the
same general character and on
sale together, or intended to be
used together and to each of which
the same design is applied
Industrially applied
Production in quantity.
Case : RH Collier & Co Ltd. Design
Application 1937 54 RPC.
Case: KK Suwa Seikoshas Application
1982 RPC 166.
Part of an article
A design applied to a part of an article is
only registrable if that part is made and
sold separately.
Case: Sifam Electrical Instrument Co Ltd v
Sangamo Weston Ltd 1973, RPC 899.
Graham J.
Appeal to and judged by the eye
Eye appeal test.
influencing customer preference
Case: Amp Inc. v Utilux Pty 1972 RPC 103
Lord Pearson It is not reasonable to
suppose that the only limitation is that the
features are visible in the finished article.
Case: Ferrero and SpAs Application 1978
RPC 473.
Basically industrial designs is the outer appearance of
an article that appeals to the eyes. Sec 3
Fulfill the interpretation of ID (Sec 3)


New in Malaysia (Sec 12)

Not contrary to public order
or morality (Sec 12)

Shape and Configuration
Pattern and Ornamentation
Combination of both
The novelty of the design for
which protection is sought lies in
the shape and configuration of the
article.
Indian 402 1930
Nokia series of collection Industrial Designs evolution
COCA COLA series of collection
Industrial designs evolution
The novelty of the design for which
protection is sought lies in the
pattern and ornamentation of the
article as shown in the
representations.
1. A Method or principle of construction
2. The features of the article are dictated solely
by function
3. The features of the article depend upon the
appearance of another article which forms an
integral part of that article
4. It differs only in immaterial details or features
5. The features of the article do not have a clear
aesthetic appearance
Designs features dictated solely by
function are not registrable.

Characteristics: Lacks design freedom

However, designs features
incorporating funtionalbility to a lesser
degree are allowed
Must fit:
.i.e. no other feature is possible in
order to maintain the function of the
object.

Must match:
Design features must not be
dependent upon the appearance of
another article
Boot Lid
Door panels
Bumpers
Bonnet Lid
Rear Lamp
An industrial design is NOT considered to
be new if it only differs in immaterial details
or features.
4. Differs only in immaterial
details or features
Ex: an ordinary sized pencil redesigned to become shortened.
MY-08-00094-0106 MY-08-00095-0206
MY-08-00096-0306
MY-08-00097-0406
Box
Plain wall paper Can
5. The features of the article do NOT
have a clear aesthetic appearance.
Designs contrary to public order or morality
(Sec 13)

- Inclusive religion and moral standards
The requirement of novelty
Absolute novelty.
Avoid use before application.
Case: The Teik Boay v Chuah Saik Loo
1962 28 MLJ.80.
Case: Besalon International Ltd and 2
others v South Strong Industries Sdn. Bhd.
1997 2 AMR 1333.
Case:Ang Lay See & Others v Solite
Impex Pte, Ltd 1998 2 SLR 365.
A statement relating to the
representation of an article to
which the design is applied that
indicates those features of the
representation in respect of which
novelty is claimed
Within the period of 6 months preceding
the filing date
a) it appeared in an official or officially
recognized exhibition; or

b) it has been disclosed by a person
other than the applicant as a result of
an unlawful act
The owner of a registered design makes an
application to register the same design in
respect of other articles
1. Single Application
- One design one class

2. Multiple application
- Two or more designs relating to the same class or set of
articles

3. Associated application
- Same registered design applied to other articles
- Same registered design with modification applied to
same or other articles but does not qualifies for novelty
- Common proprietorship

4. Divisional application
- One or more designs excluded when filing initial
application
New application ID Form 1
Application Fees RM 400
Multiple RM 400 (1st)
(subsequent designs) RM 200

Six sets of representations of the article


Second Schedule
Forms
(Regulation 4)

ID Form 1 Ministry of Domestic Trade
and Consumer Affairs, Malaysia

Industrial Design Act 1996 Intellectual Property Division
Industrial Designs Regulations 1999 Industrial Designs Registration Office
(Section 14 and regulation 5)

Application for registration of
an Industrial Designs
___________________________________________________
1. Application number: 01-00001
______________________________________________________________________________________________________

2. Full name and address of /each applicant: Lai Kratong Sdn. Bhd.
123, Jalan Tanduk,
50000 Kuala Lumpur
If the applicant is a corporate body, give country/state
of incorporation. Malaysia
______________________________________________________________________________________________________

3. Full name and address of the author: Johnny Walker
101, Avenue Park
U.S.A
______________________________________________________________________________________________________
4. Name of agent (if applicable): Mr. Forest Bushman
Address for service in Malaysia: Black & White Consultancy
888, Jalan Hitam Putih, 52000 Kuala Lumpur.
______________________________________________________________________________________________________
(Form 1 cont.)
_______________________________________________________________________________________________________
5. Name the particular article or set of
articles to which the design applies: A Toy
_______________________________________________________________________________________________________

6. Classification: 21-01
_______________________________________________________________________________________________________
7. Multiple application (if any): 2
______________________________________________________________________________________________________
8. Association: MY 00-00001


_______________________________________________________________________________________________________
Country Date of filing
9. Declaration of priority (if any): U.S.A 01.01.2001

_______________________________________________________________________________________________________
10. If details in column 9 applies & the previous
application was not made in name(s) given in column 1, Deed of assignment executed between Ali Baba
give details of the instrument, which gives the applicant and Lai Kratong Sdn.Bhd dated 12.12.2000.

the right to apply for registration.

_______________________________________________________________________________________________________
11. Declaration: Name SUKAM ALI
Designation MANAGING DIRECTOR








A statement relating to the
representation of an article to
which the design is applied that
indicates those features of the
representation in respect of which
novelty is claimed
In the form of photograph or
drawing
Must be clear
No other object that can be seen
Size photo@drawing-2.5cm x 9 cm
Chair
Shoes
Bottle
Tap
Gratings Rim
1.4 RIGHT VIEW 1.4 RIGHT VIEW



YAMAHA HATSUDOKI KABUSHIKI KAISHA
MY 05- 00490 - REGISTERED
Company X - OBJECTED
The earliest date on which all of the
following conditions are satisfied:
the documents mentioned in previous
slide identify the applicant or applicants
the prescribed filing fee is paid
the prescribed number of
representations is filed
The filing date of the application
The earliest date of an earlier
applications filed by an applicant in
any of the member states of the Paris
Convention for the Protection of
Industrial Property
Convention priority claim must be
within 6 months from such earliest
date
6 months
Application filed by A
in UK 1 Jan 2009
Last date to claim
priority in Msia
1 July 2009
Application filed by B
in Malaysia 25 Jan 2009
Application filed
by A in Malaysia
28 June 2009
- Upon grant of certificate, 5 years from
the filing date

- Option to be extended for further two
consecutive terms of 5 years each

- Total period of protection is 15 years
Registration lapses when
application for an extension is
not made or an extension fee is
not paid
(6 months after expiry date)

Sec. 25(3)
Lapsed registration may be
restored within a year of date of
notice in the Gazette by:

i.Filing a request for restoration
(Form ID3 + fees + surcharge)
ii.Payment of outstanding extension fee and
surcharge for restoration.
iii.Filing a statement setting out the
circumstances that led to failure to extend
Registrar satisfied publish in the Gazette
- intention to restore the lapsed registration

Within 3 months no opposition restore
File Form ID 2 + fees + surcharge



Rectification and revocation
Rectification section 24
Application to court
Person aggrieved
At any time after registration any
person may apply to the Court for
the revocation of registration on the
ground of disclosure prior to priority date
the cancellation of registration on the
ground that the registration procured by
unlawful means
the grant of compulsory license on the
ground that design not applied in Malaysia
Revocation, Cancellation and
Compulsory Licence

Section 27(1)
Section 24 & Section 27
Arensi Marley (M) Sdn Bhd v Middy Industries Sdn Bhd [2004] 8 CLJ 20. per
Vincent Ng J:
Background
The applicant manufactures and markets uPVC rainwater products in Malaysia.
Their main product is a rainwater gutter system known as Rainwater System
which consists of rain gutters and gutter fittings which when fitted together, form
a complete gutter system for a house or building.
The applicant is also the copyright owner in the original artistic work comprised
in designs of a rain gutter including three dimensional reproduction of designs
being part of a whole gutter system (Gutter Designs)
In early April 2002, the applicant was alerted to Design 372 which they maintain
was not only a substantial reproduction of their own Gutter Designs but also
designed to only fit the applicant's Rainwater System. The applicant submitted
that the respondent's representations in their design registration dated 16 July
2001, were almost identical to their Gutter designs or different from them only in
immaterial details. For this reason, the applicant sought to invalidate the
registration of Design 372 and have the same expunged from the Register of
Industrial Designs, Malaysia.

Section 24 & Section 27
Arensi Marley (M) Sdn Bhd v Middy Industries Sdn Bhd [2004] 8
CLJ 20. per Vincent Ng J:
The respondent opposed the application on the grounds that Design
372, which is not only registered I Malaysia but also in the United
Kingdom, was significantly different from the applicants Gutter
designs
Preliminary Issues
Before proceeding to consider the merits of this application, let me
first address the preliminary issues raised by the respondent.
Firstly, on the question of whether the applicant had complied with
the mandatory provisions of s 24(2) of the Act and reg 28(20 of the
Industrial Designs Regulations 1999, which required service of the
application and the supporting affidavit on the Registrar of Industrial
Designs; I am satisfied that they had gone so on 10 July 2002
Section 24 & Section 27
Arensi Marley (M) Sdn Bhd v Middy Industries Sdn Bhd [2004] 8
CLJ 20. per Vincent Ng J:
Secondly, on the question of whether the applicant was correct in
seeking to expunge of Design 372 under s 24(1) of the Act: I
considered the provisions of both ss 24 and 27 of the Act
Section 24 (1) of the Act reads as follows
Subject to the provisions of this Act-
(a) The Court may, on the application in the prescribed manner, of
any persons aggrieved by or interested in the non-inclusion in or
omission from the Registrar of any entry, or any entry wrongfully
remaining in the Register, or any error or defect in any entry in the
Register, make such order for including, making, expunging or
varying any such entry or for correcting of any such error or defect
as it deems fit..
Section 24 & Section 27
Arensi Marley (M) Sdn Bhd v Middy Industries Sdn Bhd [2004] 8
CLJ 20. per Vincent Ng J:
..whilst s 27 (1) of the Act reads as follows:
(refer)

Section 24 & Section 27
Arensi Marley (M) Sdn Bhd v Middy Industries Sdn Bhd [2004] 8
CLJ 20. per Vincent Ng J:
I am of the opinion that this application should have rightly been
made under the purview of s 27 of the Act. More so, considering
that the application was founded on the applicants belief that their
design was prior art which predated the priority date of the
respondents design.

Section 24 & Section 27
CKE Marketing Sdn Bhd v Virtual Century Sdn Bhd & Anor [2006] 5
CLJ 30, Zulkefli J
considered an application to rectify the Register of Industrial
Design on the ground that the first defendants design was
wrongfully remaining on the register in accordance with the
provision of s 24 (1) (a) of the Industrial Designs Act 1996. the main
ground relied by the plaintiff for rectification of the first defendants
wrongful registration was that it was not new at the time of the
application for registration. No observation was made to as to the
correctness of the application under section 24 for this purpose.
Section 24 & Section 27
Golden Cresent Trading Sdn Bhd v Alpine Auto Access Sdn Bhd;
Pendafter Rekabentuk Perindustrian [2008]9 CLJ 317, per Ramly Ali J:
This is an action brought by the applicants under s.27 (1) (a) of the
Industrial Designs Act 1996 for the revocation of the registration of the
respondent's Industrial Design No. MY 05 -01116 registered on 30
December 2005 under the Act in respect of Lights for Vehicle in Class
26-06 on ground that the said registered design has been disclosed to
the public prior to the priority date of the application for registration of
the industrial design on 30 December 2005 and was therefore not new
within the meaning of s 12 of the Act at the time of the application for
registration.
The applicant contends that there was prior publication of the registered
design based on the following facts:
(a) prior to the registration date, the respondent supplied to WRC, a
company in which the respondent holds 50% shares, for sale, the Wira
Projector Head Lamp which carries a design identical or substantially
similar to the registered design; and
Section 24 & Section 27
Golden Cresent Trading Sdn Bhd v Alpine Auto Access Sdn Bhd;
Pendafter Rekabentuk Perindustrian [2008]9 CLJ 317, per Ramly Ali J:
(b) prior to the registration date, WRC sold, or offered or kept for sale
the Wira Projector Head Lamp which carries a design identical or
substantially similar to the registered design as clearly evidenced by the
various advertisements made by WRC.
The applicant further contends that at all material times, the
respondent consented to or was aware of (whether actually or
constructively knowing) the sale or offer for sale carried out WRC in
respect of the Wira Projector Head Lamp prior to the registration date.
The respondent on the other hand, contends that the registered design
was new within the meaning of s 12 of the Act at the time of application
for registration and that there was no publication of the said design
prior to the registration date.

Section 24 & Section 27
Golden Cresent Trading Sdn Bhd v Alpine Auto Access Sdn Bhd;
Pendafter Rekabentuk Perindustrian [2008]9 CLJ 317, per Ramly Ali
J:
The respondent denies that it was the party who supplied to WRC
the Wira Projector Head Lamp for sale and distribution. The
respondent also denies its involvement in the management of WRC
even though it admits its 50% shareholding in the company and
contends that as a result thereof the advertisements made by WRC
were not related to the respondent.
The respondent contends that the Wira Projector Head Lamp sold
or offered for sale by WRC (and as shown in the advertisements
made by WRC) carries a design substantially different from the
registered design.
In this case, it is not disputed that WRC sold, or offered or kept for
sale the Wira Projector Head Lamp prior to the registration date,
and that the respondent hold 50% shares in WRC.


Section 24 & Section 27
Golden Cresent Trading Sdn Bhd v Alpine Auto Access Sdn Bhd;
Pendafter Rekabentuk Perindustrian [2008]9 CLJ 317, per Ramly Ali
J:
The respondent denies that it was the party who supplied to WRC
the Wira Projector Head Lamp for sale and distribution. The
respondent also denies its involvement in the management of WRC
even though it admits its 50% shareholding in the company and
contends that as a result thereof the advertisements made by WRC
were not related to the respondent.
The respondent contends that the Wira Projector Head Lamp sold
or offered for sale by WRC (and as shown in the advertisements
made by WRC) carries a design substantially different from the
registered design.
In this case, it is not disputed that WRC sold, or offered or kept for
sale the Wira Projector Head Lamp prior to the registration date,
and that the respondent hold 50% shares in WRC.


Section 24 & Section 27
Golden Cresent Trading Sdn Bhd v Alpine Auto Access Sdn Bhd;
Pendafter Rekabentuk Perindustrian [2008]9 CLJ 317, per Ramly Ali
J:
The respondent denies that it was the party who supplied to WRC
the Wira Projector Head Lamp for sale and distribution. The
respondent also denies its involvement in the management of WRC
even though it admits its 50% shareholding in the company and
contends that as a result thereof the advertisements made by WRC
were not related to the respondent.
The respondent contends that the Wira Projector Head Lamp sold
or offered for sale by WRC (and as shown in the advertisements
made by WRC) carries a design substantially different from the
registered design.
In this case, it is not disputed that WRC sold, or offered or kept for
sale the Wira Projector Head Lamp prior to the registration date,
and that the respondent hold 50% shares in WRC.


Section 24 & Section 27
Golden Cresent Trading Sdn Bhd v Alpine Auto Access Sdn Bhd;
Pendafter Rekabentuk Perindustrian [2008]9 CLJ 317, per Ramly Ali
J:
The respondent denies that it was the party who supplied to WRC
the Wira Projector Head Lamp for sale and distribution. The
respondent also denies its involvement in the management of WRC
even though it admits its 50% shareholding in the company and
contends that as a result thereof the advertisements made by WRC
were not related to the respondent.
The respondent contends that the Wira Projector Head Lamp sold
or offered for sale by WRC (and as shown in the advertisements
made by WRC) carries a design substantially different from the
registered design.
In this case, it is not disputed that WRC sold, or offered or kept for
sale the Wira Projector Head Lamp prior to the registration date,
and that the respondent hold 50% shares in WRC.


Section 24 & Section 27
Golden Cresent Trading Sdn Bhd v Alpine Auto Access Sdn Bhd;
Pendafter Rekabentuk Perindustrian [2008]9 CLJ 317, per Ramly Ali
J:
In the present case, the respondent never disputed that the Wira
Projector Head Lamp was already sold, or offered or kept for sale
by WRC prior to the registration date of the respondents registered
design.
In such circumstances, the court is of the view that even if assuming
the respondent was not the party who supplied to WRC the Wira
Projector Head Lamp for sale and distribution, by applying the
above authorities to the present case, it is not open to the
respondent to take one or more leading features of the design
applied to WRCs Wira Projector Head Lamp and to gain
monopoly by registering a design which is identical or substantially
similar to the design of WRCs Wira Projector Head Lamp without
any real mental Activity being required for its creation given that the
respondent is in similar trade with WRC.

Section 24 & Section 27
Golden Cresent Trading Sdn Bhd v Alpine Auto Access Sdn Bhd;
Pendafter Rekabentuk Perindustrian [2008]9 CLJ 317, per Ramly Ali J:

BY comparing exchs. CCL4 and CCL6 and by looking at the
comparison made in exch.CCL8, it is clear that the respondents
registered design was not new within the meaning of s.12 of the Act
since taken as a whole the respondents registered design is identical
or substantially similar to the leading features of WRCs Wira Projector
Head Lamp design, which is the main head lamp ( and not the curvy
triangle side lamp attached to it).
In the respondents' submission, the respondent attempted to highlight
the distinctive figures of the respondents registered design in para (e)
by referring to the various functions of the respondents design. The
court is of the view that in this proceeding. Such alleged functions are
not relevant factors for consideration in light of the definition of
industrial design as provided in s. 3 of the Act above. Functions are
not to be judged by the eye. The appearance does.

Section 24 & Section 27
Golden Cresent Trading Sdn Bhd v Alpine Auto Access Sdn Bhd;
Pendafter Rekabentuk Perindustrian [2008]9 CLJ 317, per Ramly Ali J:
Based on the aforesaid authorities, the court finds that the sale or offer
for sale carried out by WRC in respect of the Wira Projector Head
Lamp prior to the registration date and the advertisement made in
respect thereof clearly amounted to prior publications of the registered
design.
Further, in this case, the respondent did not contest substantially the
appellant's claim that the respondent was the party who supplied the
Wira Projector Head Lamp to WRC for sale by providing evidence to
the contrary. The respondent had provided a statutory declaration
from WRC in exh H4 of AJR3 to support its contention that the
respondent was not involveed in the management of WRC but merely
put forward a bare denial to the appellants claim that the respondent
was the party who supplied the Wira Projector Head Lamp to WRC for
sale. In such circumstances and given the close relationship between
WRC and the respondent, adverse inference ought to be drawn against
the respondent.
Section 24 & Section 27
Golden Cresent Trading Sdn Bhd v Alpine Auto Access Sdn Bhd; Pendafter
Rekabentuk Perindustrian [2008]9 CLJ 317, per Ramly Ali J:
Conclusion
Based on the above consideration, the court makes the following rulings:
(a) based on the definitions of industrial design under s.3 of the IDA and
relevant authorities, the court finds that the Respondents Registered Design
(No. MY 05-01116 registered on 30 December 2005 in respect of lights for
Vehicles in Class 26-06), as a whole is identical or substantially similar to the
leading features of the design applied to the Wira Projector Head Lamp which
has been sold or offered or kept for sale by WRC prior to the registration date;
(b) that there was prior publication of the registered design;
that being the case, the registered design was not new within the meaning of
s.12 of the Act (IDA) and
(d) therefore, by virtue of s;27 (1)(A) OF THE SQQAME Act, the court is
satisfied that the respondents registered design should be revoked and
removed from the register.
Who is the owner?
Section 11
Section 10
-the author=original owner
Section 10(1)
-commission work
-of service ( employee)
- employer
-for service
Computer aided design
Before registration
After registration
Section 29

Exclusive right to make or import
for sale or hire, or for use for the
purposes of any trade or business,
or to sell, hire or offer or expose
for sale or hire, any article to which
the registered industrial design has
been applied.
Rights of owner

Personal property
Section 29
Rights accorded by
Registration
Section 32 (1)
Section 32 (2)

Monopoly Right
Gaskell & Chambers v Measure Master [1933] RPC 76
Per Aldous J at 80, Whether or not copying took place
is, I believe, irrelevant. The test of infringement is an
objective test based on a comparison of the registered
design and the alleged infringement. Thus a bad copy or
a copy of only a part may not infringe but an independent
design may do so.
Without the license or consent of the owner a
person does any of the following things
Applies the design or any fraudulent or obvious
imitation of it to any article;

Imports into Malaysia for sale, for use for the
purposes of any trade or business, any article to
which the industrial design or any fraudulent or
obvious imitation of it has been applied outside
Malaysia without the license or consent of the
owner;

Sells, or offers or keeps for sale, or hires, or offers
or keeps for hire, any of the articles described
above.


Institute legal proceedings against any
person who
- has infringed or is infringing any
of the rights conferred;
- has performed acts which make
it likely that an infringement will
occur.
The proceedings may not be instituted
after 5 years from the act of
infringement.
For infringement committed or being
committed:
- damages or an account of profit
- an injunction to prevent further
infringement, etc.
For acts which may make it likely
that an infringement will occur:
- an injunction to prevent further
infringement, etc.
Infringement and invalidity
Not fulfilling novelty is ground of
invalidation .
Important in infringement action.
There must be no prior publication.
Meaning of prior publication
- disclose to the public.
-available to members of the public
Prior user.
Shown and disclosed to members of
public.
Not necessary design should have actually
been used.
Infringement
- having the same designs or imitation.
Test not substantially different
Case: Hecla Foundry Co v Walker, Hunter
& Co 1889 14 App Cas 550.
Case: Bourjois Ltd v British Home Stores
Ltd 1951 RPC
Case: Best Products v FW Woolworth &
Co Ltd 1964.
The court decide on the degree of
similarity
Case: Amp Inc. v Utilux Pty Ltd.
Lord Reid .
The eye of the customer
Wallpaper Manufacturers Ltd v derby
Paper Staining Co 1925, 42 RPC 443.
- apply general impression rather than
detailed analysis.
Romer J

Similarity
Best products case:
Harman J
Test of Infringement
Benchairs Limited v Chair Centre Limited [1973] FSR 123, per Russel
LJ at 125
There are two points deserving particular mention at the outset. The
judge, in dealing with the question whether or not the front legs of the
plaintiffs design were upright angles to the side pieces, said that it did
not appear plainly from the design that this was so, or not so plainly as
in the exhibited plaintiffs chair; and that the design illustrations did not
seem to place any particular emphasis on such a right angled effect.
We would comment upon this (i) that to our eyes the illustration of the
design does show this feature of a right angle. (ii) Mr Chapman in his
affidavit for the plaintiff, which exhibited the plaintiff's chair No 141,
exhibit W.C.c.1, expressly stated that there was no variation between it
and the registered design, that it is of the same design, and that the
front legs of the plaintiffs chair are set at 90 degrees, and (ii) in those
circumstances it is we consider, proper to regard the plaintiff's exhibited
chair as a visual representation of the subject matter of the registered
design, as was done by Lloyd Jacob J in W. Lusty 7 Sons Ltd v Morris
Wilkinson (1954) 71 RPC 169 at 179.
Test of Infringement
Benchairs Limited v Chair Centre Limited [1973] FSR
123, per Russel LJ at 127
As we see it, our task is to look at these two chairs, to
observe their similarities and differences, to see them
together and separately, and to bear in mind that in the
end the question whether or not the design of the
defendant's chair is substantially different from that of the
plaintiff is to be answered by consideration of the
respective designs as a whole and apparently, though
we do not think it affects our present decision, viewed as
though through the eyes of a consumer or customer.
Test of Infringement
Gaskell & Chambers v Measure Master [1993] RPC 76, per
Aldous J at 78 79
The plaintiff, included in its registered design a statement of
novelty that:
The features of the design for which novelty is claimed are
the shape and configuration applied to the articles as shown
in the representation.
Thus the plaintiff limits the monopoly it claims to all the
features of shape and configuration, but excludes pattern and
ornament.
It is not in dispute that the defendants' dispensers do not have
applied to them the same design as the registered design.
Thus the sole question for decision is: Do the defendants'
dispensers have applied to them a design which is not
substantially different from the registered design?
Test of Infringement
Gaskell & Chambers v Measure Master [1993] RPC 76, per Aldous J at
78 79
As is usual in registered design actions, embodiments of the plaintiffs
and defendants products and those of competitors were produced and
considered by the witnesses. However, care must be taken to exclude
from consideration examples of the plaintiffs dispensers which, in may
respects, followed the features of the registered design.
The comparison that has to be made is between the representation
registered and the alleged infringements.
It is necessary in particular to compare the whole of the shape and
configuration of the dispenser shown in the representations of the
registered design with the alleged infringements.
This is particular relevant in this case as the registered design only
contains a front perspective view from above and a front perspective
view from below which results in the back not being shown and only
certain features of the side being clearly visible.

Test of Infringement
Gaskell & Chambers v Measure Master [1993] RPC 76, per Aldous
J at 78 79
The decision whether the registered design and the designs of the
alleged infringements are substantially different is for the court and
cannot be delegated to the opinions of the witnesses.
It must e decided on a comparison of the features which appeal to,
and are judged by the eye.
To do this, the court must adopt the mantle of a customer who is
interested in the design of the articles in question as it is the eye of
such an interested person, the interested addressee, which is
relevant.
To adopt that mantle it is often helpful to look at what available
before the priority date of the registered design as the eye of the
interested addressee could be drawn to details if the deign of the
registered deign only differs from the prior art by such details.
Test of Infringement
Gaskell & Chambers v Measure Master [1993] RPC 76, per Aldous
J at 78 79
However where a design differs radically from previous designs
then the interested addressee's eye would be more likely to
concentrate on and he would be more likely to remember the
general form of the new design rather than the details.
It is settled law that the comparison must be made between the
registered design and the alleged infringement side by side and also
upon an assumption of now and later, namely upon the
assumption that the two designs are compared side by side and
thereafter the interested addressee goes away and comes back
later to the alleged infringement.
It is in that way that the court can conclude which features of the
design would in reality appeal to and be noticed by the eye and then
decide whether the designs are or are not substantially different.
Proceedings

Who can sue?
The owner s 33 (1)
The licensee - s 33 (4)
Limitation period s 33 (3)
Exception To Rights

Section 32 (3) Exhaustion
Section 34
Commercial exploitation
Not infringement if for own used or private
non- commercial used.
Enforcement and remedies.
Section 35
Similar remedies.
For infringement committed or being
committed:
- damages or an account of profit
- an injunction to prevent further
infringement, etc.
For acts which may make it likely
that an infringement will occur:
- an injunction to prevent further
infringement, etc.